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An IP Case from my Alma Mater - University of St Andrews v Student Gowns Ltd

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Jane Lambert

Outer House, Court of Session (Lord Doherty) The University Court of the University of St Andrews v Student Gowns Ltd [2019] CSOH 86, [2019] ScotCS CSOH_86

This was a challenge to the jurisdiction of the Scottish courts by Student Gowns Ltd. ("Gowns").  Gowns is an English company carrying on business from premises in London. In 2018 it marketed a red gown to undergraduates of the United College of St. Salvator and St Leonard in the University of St. Andrews through its website and on Google and Amazon and a roadshow in St Andrews.  The University Court of the University of St Andrews ("the Court"), the governing body of the University and proprietor of the registered trade marksUNIVERSITY OF ST. ANDREWS, ST ANDREWS UNIVERSITY and THE UNIVERSITY OF ST. ANDREWS, brought proceedings against Gowns in the Outer House of the Court of Session for infringement of those marks and passing off.

In its defence, Gowns admitted that it had so…

Evidence in IPO Tribunal Proceedings

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Jane Lambert

For many years the Chief Executive of the Intellectual Property Office ("IPO") who is also known as "the Comptroller" for patent and unregistered design right matters and "the Registrar" for trade marks and registered designs, has referred disputes that have been brought before him or her to officials known as "hearing officers".  Until 19 April 2000, those hearing officers conducted their proceedings very differently from the courts. There was nothing that resembled statements of case in civil litigation and evidence was filed in statutory declarations. As a result, many of those proceedings were slower and more expensive than they should have been.

A great change occurred on 26 April 2000 when Tribunal Practice Notice (TPN 1/2000) came into force. It addressed the following matters:
"The Office and parties should endeavour to complete with notice proceedings within 18 months. (paragraph 7)The periods for filing a counterstatem…

Database Right - 77m Ltd. v Ordnance Survey Ltd.

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Jane Lambert

Chancery Division (Mr Justice Birss) 77m Ltd v Ordnance Survey Ltd [2019] EWHC 3007 (Ch) (8 Nov 2019)

Ordnance Survey Ltd. ("OS") is the national mapping service for the United Kingdom. Since the 18th century, it has published very accurate and detailed maps of the topography of the nation that are useful for all kinds of business as well as hikers, cyclists and other leisure users.  More recently,  OS has developed a  product called AddressBasewhich matches 28 million Royal Mail postal address to unique property reference numbers. A startup company called 77m Ltd ("77") developed a similar product named Matrix using a variety of licensed or publicly available materials including some that  OS had created.  77 contended that it had created Matrix without infringing any of OS's intellectual property rights ("IPR") but OS disagreed.

77 issued [roceedings out of the Intellectual Property Enterprise Court ("IPEC") for a declaration th…

Copyright - Warner Music UK Ltd and Others v TuneIn Inc.

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Jane Lambert

Chancery Division (Mr Justice Birss) Warner Music UK Ltd and others v TuneIn Inc [2019] EWHC 2923 (Ch) (1 Nov 2019)

This was an action for copyright infringement brought by the copyright owners or exclusive licensees of sound recordings that account for more than half the market for digital sales of recorded music in the UK and about 43% globally against the audio streaming service TuneIn Inc, which is said to have 75 million active users around the world with access to about 100,000 radio stations.  This action had been heard by Mr Justice Henry Carr who died before he could deliver judgment. Rather than insist on a full retrial, the parties agreed that Mr Justice Birss should read the materials, including the transcripts of the hearing and then hear the parties' arguments.  The hearing before Mr Justice Birss took place on 26 and 27 Sept 2019 and he delivered judgment on 1 Nov 2019.

The Issue

TuneIn offers a service that enables members of the public to listen to a ra…

Trade Marks - Bentley 1962 Ltd and another v Bentley Motors Ltd.

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Jane Lambert

Chancery Division (HH Judge Hacon) Bentley 1962 Ltd and another v Bentley Motors Ltd [2019] EWHC 2925 (Ch) (1 Nov 2019)


This was a claim for trade mark infringement against the well-known luxury car manufacturer, Bentley Motors Ltd. The first claimant is the registered proprietor of UK trade mark numbers, 1180215 (the "lozenge mark"), 2177779A (the "series mark") and 2505233 (the "word mark"). The second defendant is its exclusive licensee,  They alleged that Bentley Motors had infringed those trade marks by selling clothing under the following sign ("the combination sign").





The action came on for trial before His Honour Judge Hacon sitting as a judge of the High Court.  The judge tried the action between 2 and 5 July 2019 and delivered judgment on 1 Nov 2019 (see Bentley 1962 Ltd and another v Bentley Motors Ltd [2019] EWHC 2925 (Ch) (1 Nov 2019)).   At paragraph [165] of his judgment, he held that the first claimant had succeeded i…

Restrictive Covenants - Affinity Workforce Solutions Ltd v McCann and others

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Jane Lambert

Business and Property Courts, Manchester (Mr Justice Snowdon, Vice-Chancellor of the County Palatine of Manchester) Affinity Workforce Solutions Ltd v McCann and others [2019] EWHC 2829 (Ch)

I cut my teeth doing cases like this when Andrew Blackett-Ord was the Vice-Chancellor of the County Palatine of Manchester and his deputies were James Fitzhugh and Michale O'Donoghue. They used to tour the North of England and on motion days their courts were packed.  My opponents included Northern Circuit legends like Bertie Maddocks and Nigel Howarth who also became circuit judges sitting in the High Court. I learned a lot from doing this sort of work.

This was an application by Affinity Workforce Solutions Ltd ("Affinity") for interim injunctions to restrain five of its former employees from taking any part in the business of the sixth defendant, Tradewind Recruitment Ltd ("Tradewind") until after the expiry of certain covenants in their contracts of employm…

Employees' Inventions - Shanks v Unilever

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Jane Lambert

Supreme Court (Lady Hale, Lord Reed, Lord Hodge, Lady Black and Lord Kitchin) Shanks v Unilever Plc [2019] UKSC 45 (23 Oct 2019)

Nowadays most commercially successful inventions in the United Kingdom are made by scientists, engineers or other technically qualified people working for companies, research institutes or universities at places like Colworth House in Bedfordshire.  Most of those scientists, engineers and technicians are paid very well for their work and many of them receive side benefits like company cars, private health insurance and stock options.

Employees' Inventions

It is for that reason that s.39 (1) of the Patents Acr 1977 provides:

"Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if -
(a) it was made in the course of the normal duties of the employee or in the course of duties falling outside…